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August 26, 2019

Another week and another technology patent falls to a patentable subject matter challenge under Alice Corp. v. CLS Bank Int'l. In this case, the patentee may have effectively shot itself in the foot with its own statements made in the specification. But the Federal Circuit also provides its clearest explanation yet (but one that is still not clear enough) of how it expects the second part of the Alice analysis to be carried out.

Chamberlain sued Techtronic Industries (TTI) and several other parties in the Northern District of Illinois, contending infringement of U.S. Patent No. 7,224,275. TTI moved the District Court for judgment as a matter of law that the '275 patent was invalid under 35 U.S.C. § 101. The District Court denied the motion and TTI appealed.

Claim 1 of the '275 patent was deemed representative by the parties. It recites:

1. A movable barrier operator comprising: a controller having a plurality of potential operational status conditions defined, at least in part, by a plurality of operating states; a movable barrier interface that is operably coupled to the controller; a wireless status condition data transmitter that is operably coupled to the controller, wherein the wireless status condition data transmitter transmits a status condition signal that: corresponds to a present operational status condition defined, at least in part, by at least two operating states from the plurality of operating states; and comprises an identifier that is at least relatively unique to the movable barrier operator, such that the status condition signal substantially uniquely identifies the movable barrier operator.

Notably, the claim does not cover an entire garage door opening apparatus, such as a track, pulley, cable, or belt. It effectively involves only a controller (e.g., a microprocessor), the movable barrier interface (e.g., a motor), and a wireless transmitter.

The Alice test is used to determine whether claims are eligible for patenting under § 101. One must first decide whether the claim at hand involves a judicially-excluded law of nature, a natural phenomenon, or an abstract idea. If so, then one must further decide whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exclusion. But elements or combinations of elements that are well-understood, routine, and conventional will not lift the claim over the § 101 hurdle. While this inquiry is generally carried out as a matter of law, factual issues can come into play when determining whether something is well-understood, routine, and conventional.

The District Court found that the claimed invention was "not directed to the transmission of data, but to garage door openers that wirelessly transmit status information." Ultimately, the District Court found that "the asserted claims are directed to a particular improvement over prior art which uses a particular manner of sending and experiencing data," which it deemed patent-eligible in light of [the Federal Circuit's] decision in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc.

On Appeal, the Federal Circuit applied the Alice test. The Court quickly concluded that claim 1 was directed to abstract idea of "wirelessly communicating status information about a system." Driving this outcome was the specification, and in particular the fact that the "only described difference between the prior art movable barrier operator systems and the claimed movable barrier operator system is that the status information about the system is communicated wirelessly, in order to overcome certain undesirable disadvantages of systems using physical signal paths." The Court noted that the identified abstract idea was similar to those found ineligible in various other Federal Circuit cases, such as Amdocs (Israel) Ltd. v. Openet Telecom, Inc.;Affinity Labs of Tex., LLC v. DIRECTV, LLC; and Affinity Labs of Texas, LLC v. Amazon.com Inc. The Court also seemed put off by the claim's breadth, as it wrote that it is "not limited to a specific implementation of a technological improvement to communication systems . . . [r]ather . . . a system that wirelessly communicates status information." The Court further found that the wireless communication is not a technological improvement. Notably, "that the claimed invention transmits data wirelessly and therefore does not rely on a wired path is not itself a technological improvement, but rather simply a feature of wireless communication, which the specification explains was already a basic, conventional form of communication."

Chamberlain argued that the claims involved a non-abstract and "novel combination of its prior art movable barrier operator with a transmitter that is wireless." But the Court found this argument to be based on a field of use limitation and therefore still abstract under Alice. Additionally, Chamberlain attempted to establish that the physical aspects of the claimed invention were enough to avoid the abstract idea classification. But, using reasoning that should surprise no one at this point, the Court stated that this was not the case when using "off-the-shelf technology for its intended purpose."

The Court then applied the second part of the Alice test. It observed that "[t]he specification describes each individual element of the asserted claims—including the controller, the interface, and the wireless data transmitter—as 'well understood in the art.'" Chamberlain argued that "the ordered combination of . . . elements provides the inventive concept because there is no evidence in the record that a new type of movable barrier operator that includes an integrated controller and a wireless transmitter to transmit a status signal was well-understood, routine and conventional to a skilled artisan." In response, the Federal Circuit explained that:

The appropriate question is not whether the entire claim as a whole was well-understood, routine and conventional to a skilled artisan (i.e., whether it lacks novelty), but rather, there are two distinct questions: (1) whether each of the elements in the claimed product (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field, and (2) whether all of the steps as an ordered combination add nothing to the laws of nature that is not already present when the steps are considered separately.

The Court never explained what exactly it means for all steps of an ordered combination to add nothing over the steps considered separately.

In any event, the Court went on to state that "the specification makes clear that transmitting information wirelessly was conventional at the time the patent was filed and could be performed with off-the-shelf technology [and] wireless transmission is the only aspect of the claims that [Chamberlain] points to as allegedly inventive over the prior art." Further, "[w]ireless communication cannot be an inventive concept here, because it is the abstract idea that the claims are directed to." As the Court found no inventive concept, the claim failed the Alice test.

Accordingly, the Federal Circuit reversed the District Court and held the asserted claims invalid under § 101.

This case is another example of judicial-exception-creep, in line with that of ChargePoint, Inc. v. SemaConnect, Inc. Similar to that decision, an invention that adds particular communication abilities to a physical device is rendered an "abstract idea" because the Court found that the only innovative part of what is claimed was the (allegedly abstract) communication itself. Of course, the specification served to quickly sink the claim by admitting that all claimed elements were known in some fashion or another (even if the combination was not), but under the current patent-eligibility regime even a more carefully-worded application would have likely led to the same outcome.

The invention here (as in ChargePoint) might have been more rationally invalidated on grounds of obviousness, though its 2003 priority date was well before wireless transceivers were being added to all kinds of conventional devices. Nonetheless, § 101 is once again the wrong tool for applying the prior art motivated invalidation. There are other parts of the statute to serve that function.

Comments

"Nonetheless, § 101 is once again the wrong tool for applying the prior art motivated invalidation. There are other parts of the statute to serve that function."

I think you are confusing inquiries. There are 4 requirements in 101 for receiving a patent. (1) someone must invent something; (2) that something must be new; (3) that something must be useful; and (4) that something must fit into one of the categories.

The Alice test is attempting to evaluate requirement (1) above, not (2) (which is better addressed in 102/103). Though they both involve analyzing what was known in the art, they are different inquiries. Sometimes (usually?) there may be overlap, but that doesnt change the fact that it is a different inquiry.

The other big difference is that 102/103 specifically examine the 'claimed invention' -- not 'the invention' as 101 does -- and these are explicitly different things according to definitions in USC 100.

Consider this example: I live in a dorm room. I rarely lock my door. In fact, the only time I ever lock my door is when I am watching my little pony (which I do naked). Did I invent or discover something?

"I claim: A door for entering a room, the door comprising a lock, wherein the door being in a locked state indicates that an adult male occupant is watching my little pony naked inside the room."

So I didn't invent the door, or the door lock, or the method of locking the door. Those elements were 'routine and conventional.' I did ascribe extrinsic meaning to the door being locked.

So, did I invent something? If so, what did I invent?

I could also add a lot more conventional and routine parts to the claim-- a door jamb, a doorknob, etc. but that doesnt impact the analysis of whether I invented or discovered something.

(Also note -- assuming no adult males ever watched my little pony with the door locked before me-- that the claimed invention itself is novel under 102, non-obvious under 103, and trivially enabled under 112, which just shows you the inquiries are different).

Re: "..its 2003 priority date was well before wireless transceivers were being added to all kinds of conventional devices."
? Numerous installations of door and window burglar alarm systems with wireless signaling of their open or closed positions?

I like Comment #1 for its listing of the requirements set by 35 USC 101. First off, you have to have an invention.

This is what lies behind PCT Rule 5. You have to describe your invention, already in your patent application as filed, so we know what it is. Whether it is a patentable one remains to be seen. In 101, all we are interested in is eligibility. The invention to be assessed is the one described in the application as filed.

But what does "invention" mean? Context is all. In 35 USC the context is contributions to something that in the 18th century was identified by the term "useful arts". Nowadays, we call the application of natural science "technology". The Federal Circuit are now busy enquiring whether the thing identified in the application as filed does indeed meet the definition of "invention" in the context of the useful arts.

Additionally (now that I am commenting), the "definition" posted above in the first post as to what 35 USC 101 actually entails is incorrect.

As you should know by now, the Act of 1952 which SET 35 USC 101 was explicit in removing the notion of "invention" from what that era's Supreme Court had made a muckery with patent law about (in dozens of similar terms).

No.

There are only two elements of 35 USC 101 that are controlling in and of 35 USC 101 itself, and these were intended to be extremely LOW bars to entering the patent system.

Those only two elements are:
1) Can the innovation be portrayed in at least one of the statutory categories; and
2) is the utility of the innovation within the Useful Arts -- that is, is the utility not of the Fine Arts.